WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Société des Produits Nestlé S.A. v. Above.com Domain Privacy, Shu Lin, Shu Lin Enterprises Limited

Case No. D2010-1882

1. The Parties

Complainant is Société des Produits Nestlé S.A. of Vevey, Switzerland, represented by Studio Barbero, Italy.

Respondents are Above.com Domain Privacy of Beaumaris, Victoria, Australia, and Shu Lin, Shu Lin Enterprises Limited of Dalian, People’s Republic of China.

2. The Domain Name and Registrar

The disputed domain name <nestlecareer.com> is registered with Above.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 5, 2010. On November 8, 2010, the Center transmitted by email to Above.com, Inc. a request for registrar verification in connection with the disputed domain name. On November 9, 2010, Above.com, Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on November 18, 2010 providing the registrant and contact information disclosed by Above.com, Inc, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on November 22, 2010.

The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondents of the Complaint, and the proceedings commenced on November 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 13, 2010. Respondents did not submit any response. Accordingly, the Center notified Respondents’ default on December 15, 2010.

The Center appointed Francisco Castillo-Chacón as the sole panelist in this matter on December 29, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is the owner of over 100,000 trademark registrations worldwide, including NESTLÉ. Complainant is a Swiss company established in 1886, it sells and markets a wide variety of products around the world. Complainant is one of the world’s largest food consumer products company in the world in terms of sales and it is considered to be the 48^th biggest company in the world.

The trademark NESTLÉ has been valued at over 6 billion USD, according to Interbrand’s Best Global Brands ranking, making it the 57^th most valuable brand in the world, according to the 2010 edition of said ranking.

Complainant has used and owns the trademark NESTLÉ in many countries around the world; in Australia where one of the Respondents is based Complainant has been using the trademark since 1906. As of 1999 Australia host Complainant’s headquarters for Oceania, this includes Australia, New Zealand and the Pacific Islands.

The fame and notoriety of Complainant’s trademark is not only well documented in the case filling, but also well known by this Panel.

Complainant also owns a series of web sites that reproduce the trademark NESTLÉ, including “www.nestle.com”, “www.nestle.com.au”, “www.nestlecareers.com” and is also using the web page “www.careers.nestle.com”, dedicated exclusively to recruitment for all its offices around the world.

Respondents are domiciled in Australia, and China. Registration for the disputed domain name was done on September 20, 2009.

5. Parties’ Contentions

A. Complainant

Complainant has rights in NESTLÉ by reason inter alia of its multiple national and international registered trademarks for NESTLÉ dating well before registration of the disputed domain name. The disputed domain name is confusingly similar to this trademark. The addition of the word “career” does nothing to diminish that confusion.

Complainant has been using the trademark around the world for a number of years, including Australia, having used the trademark since the 1800’s. The disputed domain name is confusingly similar to Complainant’s trademark NESTLÉ.

Respondents registered the disputed domain name long after Complainant had well established rights in the NESTLÉ trademark, its multiple web sites, including “www.nestle.com” and “www.nestle.com.au”. Respondents registered the disputed domain name on September 20, 2009 without Complainant’s authorization; the domain name currently directs users to pay per click pages, with multiple sponsored links, redirecting users to sites offering competing products.

Given the prominence of the NESTLÉ mark worldwide, and on the Internet, Respondents’ registration of the disputed domain name was in bad faith, further evidenced by the offer to sell the disputed domain name for an amount exceeding out of pocket expenses and with full knowledge that including the NESTLÉ mark as part of the disputed domain name would likely cause an Internet user to assume that the site was somehow sponsored by or affiliated with Complainant.

Respondents are using the disputed domain name to attract customers for commercial gain. Respondents provide commercial links to products that are directly related to and competitive with Complainant’s own products.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Effect on Default

There is a consensus that a respondent's default does not automatically result in a decision in favor of the complainant, the complainant must still establish each of the three elements required by paragraph 4(a) of the UDRP (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, para. 2.2). Notwithstanding this, paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, a panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules.

This Panel has not found any exceptional circumstances to justify Respondents’ failure to submit a Response. In short Respondents do not expressly deny any of the facts stated by Complainant and the Panel therefore infers that Respondents do not deny the facts asserted and contentions made by Complainant from these facts. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; LCIA (London Court of International Arbitration) v. Wellsbuck Corporation, WIPO Case No. D2005-0084; Ross-Simons, Inc. v. Domain.Contact, WIPO Case No. D2003-0994.

With that being said, asserted facts that are not unreasonable will be taken as true and Respondents will be subject to the inferences that derive from the information provided by Complainant. Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441; RX America, LLC. v. Matthew Smith, WIPO Case No. D2005-0540.

B. Identical or Confusingly Similar

Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

Complainant’s trademark rights are measured as at the date when the Complaint was filed. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.4.

Respondents registered the disputed domain name well after Complainant established rights in its NESTLÉ trademark, (see, e.g., Dow Jones & Company, Inc. v. Idea Studios LLC dba Envent, WIPO Case No. D2009-1033). Complainant has clearly demonstrated that it had registered national and international trademarks comprising or incorporating NESTLÉ well before 2009 when the disputed domain name was registered. Complainant further evidenced its rights over several domain names comprising or incorporating the trademark NESTLÉ.

Previous UDRP panels have held that when a domain name wholly incorporates a complainant's registered trademark, this is sufficient to establish confusing similarity for purposes of the Policy. See, e.g., Telstra Corporation Limited v. Barry Cheng Kwok Chu, WIPO Case No. D2000-0423; Pfizer Inc. v. United Pharmacy Ltd., WIPO Case No. D2001-0446; E.I. du Pont de Nemours and Company v. Richi Industry S.r.l., WIPO Case No. D2001-1206; Utensilerie Associate S.p.A. v. C & M, WIPO Case No. D2003-0159; Shaw Industries Group Inc., Columbia Insurance Company v. Wan-Fu China, Ltd., WIPO Case No. D2007-0282. In the Panel’s view, if this is true as a general principle, it is even more so, when the disputed domain name wholly incorporates a famous and well-known trademark such as NESTLÉ. Likelihood of confusions is even more evident since Complainant owns and operates an almost identical domain name, in this case, <nestlecareers.com>, and also operates the web page “www.careers.nestle.com”. The Panel has found no facts or arguments that could justify a dissent from the consensus view, therefore in consent with previous panels, this Panel finds that the mere addition of a generic term such as “career” to a trademark such as NESTLÉ, does not eliminate the confusing similarity between the two.

Therefore the Panel finds that the disputed domain name is confusingly similar to Complainant’s NESTLÉ trademark.

C. Rights or Legitimate Interests

Complainant has made its prima facie case that Respondents lack any rights or legitimate interests in the disputed domain name. Respondents failed to respond or to offer any evidence to demonstrate that Complainant has ever authorized them to use the NESTLÉ trademark.

The Panel concurs with the prior UDRP decisions holding that, in circumstances similar to this, there is no bona fide offering of goods or services where the disputed domain name resolves to a website with sponsored links. See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415; F. Hoffmann-La Roche AG v. Titan Net, WIPO Case No. D2006-0424; and Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.

Similarly, the panel in Gene Kelly Image Trust v. BWI Domain Manager, WIPO Case No. D2008-0342, found that “[t]he existence of sponsored links on the website also clearly demonstrates that the Respondent is not using the disputed domain name as a legitimate non-commercial fan site. On the contrary, it appears plain that the Respondent is using the disputed domain name to make a commercial gain.”

It is the view of this Panel that Complainant has satisfied its burden and provided the Panel with sufficient evidence to meet the prima facie requirement showing that Respondents have no rights to or legitimate interests in the disputed domain name. By defaulting the proceedings Respondents have not provided the Panel with any evidence to demonstrate rights or legitimate interests in the disputed domain name as set forth in paragraph 4(c) of the Policy. Therefore the Panel concludes that Respondents have no rights or legitimate interests in the disputed domain name. Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465. This holding is consistent with WIPO Panel Views on Selected UDRP Questions, para. 2.1., pursuant to which “once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”

For all of these reasons, the Panel finds that para 4(a)(ii) of the Policy has been satisfied by Complainant

D. Registered and Used in Bad Faith

Complainant contents that Respondents were aware of the existence of the NESTLÉ trademark and that said knowledge became evident when an inquiry to purchase the disputed domain name was made and Respondents offered the site for sale, knowing that the buyer was going to offer the site to its new client Nestlé. The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are (1) that the domain name has been registered or acquired by a respondent "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name" (Id., paragraph 4(b)(i)); (2) that a respondent has registered the domain name "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct" (id., paragraph 4(b)(ii)), and (3) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location" (id., para graph 4(b)(iv)).

In this case, Respondent offered to sell the disputed domain name to Complainant in response to an inquiry from an agency supposedly working for Complainant. The agency contacted Respondent indicating the desire to acquire the disputed domain name.

The Panel does not believe that all offers to sell a domain name in response to an inquiry from another party necessarily constitute bad faith within the meaning of the Policy. However, cases where the registrant of a domain name which is identical or confusingly to a trademark offers such domain name for sale on an unsolicited basis for an amount that is in excess of out-of-pocket costs directly related to the domain name would commonly be considered as constitutive of bad faith in accordance with the Policy.

The Respondent in this case offered to sell to a company supposedly working for Complainant, at a substantial price, a domain name which corresponds, not only to a trademark owned by Complainant but which is also a trade name, and the name under which Complainant conducts business in several countries around the world including Australia. Absent some exceptional justification from Respondents, it is reasonable to infer that they registered the domain name with the primary intention of either confusing visitors as to the source of the domain name, simply benefiting from Complainant’s well established fame, or selling the domain name to Complainant for valuable consideration in excess of its out-of-pocket expenses directly related to the domain name. This constitutes bad faith within the meaning of paragraph 4(b)(i) of the Policy.

The Panel does not believe that the reproduction of Complainant’s trademark in the disputed domain name is an accident, as the word Nestlé has no meaning in English which is the language of the disputed domain name, and it is evident Respondents knew about Complainant’s trademark and its commercial activities by the fact that many of the sponsored links direct visitors to competing products. The Panel therefore concurs with previous UDRP decisions holding that registration of a well-known trademark as a domain name may be a further evidence of bad faith. See PepsiCo, Inc. v. "null", aka Alexander Zhavoronkov, WIPO Case No. D2002-0562; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163; Pepsico, Inc. v. Domain Admin, WIPO Case No. D2006-0435.

In addition, given the extensive and worldwide reputation of the NESTLÉ trademark and the presence of Complainant in the Australia and China, as determined by the documentary evidence and contentions submitted, the Panel sees no evidence of a good faith registration, nor can the Panel find any explanation, other than bad faith in the reproduction of Complainant’s trademark in the disputed domain name. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847. Such circumstance is further evidence of registration of a domain name in bad faith under paragraph 4(b) of the Policy.

There is a further element which is relevant in the resolution of this dispute. As indicated earlier, Complainant has registered the domain names, <nestlecareers.com>, <nestle.com> and <careers.nestle.com>, and Complainant maintains a website dedicated to the recruitment of personnel for its offices around the world (“www.careers.nestle.com”). Therefore, the disputed domain name was created not only to take advantage of the fame of the NESTLÉ trademark in general but also to benefit from particular activities carried out by Complainant by creating a likelihood of confusion with Complainant.

The Panel also finds that in this case the content of the website is especially relevant in the finding of bad faith use. As indicated before, Respondent's website contains sponsored links. The Panel concurs with the understanding of several other UDRP panels that in circumstances similar to this case the use of a domain name to point to a website that offers sponsored links to other websites is an evidence of bad faith, particularly if, as in the instant case, where many of these sponsored links offer competing products. It has been clearly established in this case that Complainant registered and has been using the trademark NESTLÉ long before the disputed domain name was registered. Mudd, (USA) LLC v. Unasi Inc. (MUDDPRODUCTS COM DOM), WIPO Case No. D2005-0591; Volvo Trademark Holding AB v. Unasi, Inc., WIPO Case No. D2005-0556.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <nestlecareer.com> be transferred to Complainant.

Francisco Castillo-Chacón
Sole Panelist
Dated: January 11, 2011